LibraryLaw Blog

Schindler's list, Costco, and Common-law Copyrights

The Volokh Conspiracy blog recently highlighted a case of interest to anyone who deals with manuscripts.  Rosenberg v Zimet concerned the ownership of a version of "Schindler's List," the list of essential employees used by Oskar Schindler to protect many of them from transportation to death camps.  One copy of the list is physcially housed in the Holocaust Museum Yad Vashem in Israel, though copyright in the document belongs to Marta Rosenberg, the heir to Schindler's widow.  A second copy ended up in the hands of one of Schindler's employees, who eventually gave it to Thomas Keneally, the author of the book on which the Schindler's List movie is based.  That copy was included in the Keneally papers purchased by the State Library of New South Wales.  (It apparently is not, as the lawsuit suggests, the copy that is "the object of this lawsuit.")  A third copy belonged to Schindler's accountant and is now for sale from M.I.T. Memorablia. The lawsuit was an attempt by the copyright owner, Marta Rosenberg, to prevent the sale of the document.

There are two elements in the case that make this of interest to manuscript curators.  First, the court opens with a discussion of the common law copyrights that might be present in the document.  Eugene Volokh points out - correctly, I believe - that the court got this wrong.  I can't think of any common law copyright in the document that was not pre-empted by bringing unpublished items under Federal protection in the 1976 Copyright Act. 

I was interested to see, however, that the Court did cite Pushman and its progeny as far as copyright transfer is concerned.  I thought I might be the only person who still remembered Pushman and think that it may have some relevance.  The Court seemed to suggest that if there had been a bill of sale from the copyright owner for the material, and if there was no reservation of rights, then copyright in manuscript items can transfer with the physical object.  It is possible that some repositories may have unknowingly acquired copyrights when they acquired physical title to unpublished works.

Second, Volokh concludes that in spite of the Court's misunderstanding regarding common law copyrights, "the transfer of the list is indeed permissible."  This would seem like a no-brainer; thanks to the "first sale" doctrine embodied in Section 109, one does not need the permission of the copyright owner to sell a physical copy of the work.  Or so it seemed until the Supreme Court recently split in Omega Watch v. Costco , about which I wrote earlier.  In that case, the Appeals Court concluded that unless a sale in the U.S. is authorized by the copyright owner, first sale rights do not apply.  ("[Section 109] applies to copies made abroad only if the copies have been sold in the United States by the copyright owner or with its authority.”)  In this case, the copyright owner never apparently authorized the sale of copies of the list in the U.S., and so M.I.T. Memorablia's sale of the copy would seem to be no more legal than Costco's attempt to sell gray-market watches. 

Costco may not be a total disaster for libraries.  Kenny Crews has a useful post on how its implications may not be terrible for libraries.  And even in this case, it might be that a court would conclude that because of Section 104(a), unpublished works created abroad are "lawfully made under this title," as required by Section 109 (even though U.S. copyright law is not to supposed to have extraterritorial application).  Alternatively, the Court could conclude that the compilation of a list of names does not have enough originality to warrant copyright protection, and hence Costco would not apply.  But it just highlights for me the uncertainty we now face when dealing with foreign materials.  Let's hope that Congress fixes this soon.

Copyright and Mark Twain’s Autobiography

(by Peter Hirtle)

A number of people have been commenting on the copyright status of Mark Twain’s Autobiography, which was recently published by the University of California Press and has become a best-seller.  Elizabeth Townsend Gard has a post on it, and an article in the National Law Journal by Sheri Qualters entitled “A creative approach to preserving copyright for Twain autobiography” has been getting cited and reprinted in a number of venues. 

I told the story of Mark Twain’s copyrights on page 44 of Copyright & Cultural Institutions (http://hdl.handle.net/1813/14142) - though I did not speak specifically to Twain's autobiography.  At the heart of the story is the fact that Berkeley offered for sale in 2001 a microfilm set that apparently contained the Autobiography.  I can’t see that anyone actually bought the microfilm set, but by offering it for sale, California extended the copyright on the manuscript until 2047.

A few observations:

1. I have often wondered if the Mark Twain Papers Project actually produced the microfilm, or if it would have done so if anyone had ordered a copy. I see, however, that the UC library appears to own a copy. This suggests to me that the Twain manuscripts were "published" in 2001, as the Foundation and the UC Press maintains.

2. On the flip side, the statement on the UC press cite that it is "proud to offer for the first time Mark Twain's uncensored autobiography in its entirety and exactly as he left it" must be wrong. If it were true, then there would be no copyright in the autobiography.   It seems that marketing hype is more important than editorial precision.

3. While the Autobiography manuscript may have been the property of the Foundation or the Bancroft Library, the Papers project also has copies of Twain letters and manuscripts that it received from other repositories. They have never said what was included in the microfilm editions of Twain’s works, but my guess is that they also "published" unpublished letters and manuscripts that are owned by other repositories.

It is an interesting question whether California had permission to do this. The letter soliciting copies of Twain materials (an example of which is displayed at the 45 minute mark in Robert Hirst's talk at http://www.cornell.edu/video/?videoID=776) announces the project was "preparing for publication by the University of California Press a complete series of Mark Twain's writings." The letter concludes "We will of course honor any restrictions you must place on the material and will ask your permission before publication if your prefer not to give it at this time."

I find two things interesting about this letter. First, it is an open question as to what is the scope of the publication permissions granted. Certainly, it would appear that a repository that sent Berkeley an unrestricted copy of a Twain letter was giving permission to have the letter published in a letterpress edition by the UC Press. Whether this permission would extend to a microfilm or electronic version is debatable. (It reminds me a bit of the Random House v. Rosetta Books case, which hinged on the question of whether "book" publication extended to electronic editions of a text. It apparently did not.)

Second, there is no indication in the letter that by supplying a copy of a letter to Berkeley, a repository might be increasing the restrictions on its holdings. Of course, in 1967, when this letter was sent, unpublished material had perpetual copyright; publication by the UC Press would actually help repositories by eventually inserting the unpublished item into the public domain (albeit 95 years after first publication). With the change in the 1978 Copyright Act, however, which brought unpublished items under statutory protection, publication by the UC Press would work against the owning repository's interests by extending copyright in unpublished items that otherwise would have expired in 2003. I do not know if the Twain Papers contacted the owning repositories to seek permission to publish the items of which it had been given copies, but I think it should have. The change in copyright law would seem to have demanded a new set of permissions.

Of course, part of the blame must fall on the owning repositories as well. It makes little sense to require "permission to publish" if one does nothing when someone violates the scope of that permission. It is one more reason why libraries should get out of the permission business, except for those rare instances when they actually own the copyright in a work.

Incidentally, I don't think that the failure of the Mark Twain Papers project to secure the permission of the owning repository before publishing the microfilm edition of Twain documents would affect the copyright status of the copied manuscripts. They would still have been published with the authority of the copyright owner, which is all that is required to establish statutory copyright.

Who infringed at Georgia State?

We have a ruling from the court over the motions for summary judgement in the lawsuit over Georgia State's ereserve program.  Kevin Smith gives an excellent analysis of the order in Going forward with Georgia State lawsuit.  The bottom line is that the court did not find Georgia State guilty of direct and vicarious copyright infringement, as the plaintiffs requested.  The only issue that will go forward is whether Georgia State contributed to the copyright infringement of others through its implementation of its 2009 policy.  (You can read more about direct  and indirect copyright infringement in Section 4.5 of Copyright and Cultural Institutions.)

As Kevin notes, there are lots of interesting legal issues discussed in the order.  What struck me most of all was the unanswered question of who actually infringed.  In order to have indirect copyright infringement, there must be a direct infringement.  The publishers seem to suggest that it was the "librarians and professors" who scanned, copied, displayed, and distributed the Plaintiffs' copyrighted works "on a widespread and continuing basis."  Under the publishers' theory, they could have sued the faculty members who made or requested the copies (and who also write the books they publish) for direct copyright infringement.

In reality, the most that professors and librarians do is make one copy available on a server.  Any distribution of these works is initiated by the students.  The court seemed to recognize this in a footnote when it observes that the plaintiff's theory of liability would actually have the students who downloaded material be the potential direct infringers.  The case may hinge, therefore, on whether students, and not faculty and librarians, are potential direct infringers.  The question would then be whether a student making a single copy of a brief work for educational purposes is a fair use.  If it is, then there is no direct infringement and there can therefore be no indirect contributory infringement. 

There was one other interesting tidbit in a note.  Apparently the Copyright Clearance Center is paying for 50% of this legal action.  It is disturbing to think that a portion of the administrative fees that libraries are paying to the CCC are being used to bring legal actions against those paying the fees.  While the CCC may claim that it is serving the interests of those who use it, that doesn't seem to be true in this case.

UPDATE:  In addition to Kevin Smith's analysis cited above, see theexcellent discussion on the ARL Policy Notes blog.

Using Netflix in a Library

(by Peter Hirtle)

One of the things that Napster taught us is that just because it is easy to do something, it is not always legal. 

There is a recent post that has been getting some buzz.  In “Using Netflix at an Academic Library,” Rebecca Fitzgerald describes how Concordia College uses a Netflix subscription to supply movies to students.  She reports that using Netflix subscriptions has been a great success, saving the library over $3,000 so far by substituting film purchases and licensing with Netflix rentals and instant play. 

The program appears to be popular with the students and saves the college money.  It is easy - but is it legal?  I don’t see how. 

Here is the problem: As one of the commentators on her post notes, when you sign up with Netflix you enter into a binding contract with them.  The terms of that contract specify that “our DVD rental service and the content on the Netflix website, including content viewed through our instant watching functionality, are for your personal and non-commercial use only and we grant you a limited license to access the Netflix website for that purpose” (emphasis mine).  As far as the instant play service of Netflix, its end user license stipulates that Netflix grants the licensee “a non-exclusive, limited, personal and nontransferable license, subject to and conditioned on your compliance with the restrictions set forth in this License Agreement, to install and use the Software.”  To whom does this apply?  Netflix stipulates that the licensee includes “members of your immediate household for whom you will be responsible hereunder and users of the personal computer or Netflix ready device with which you are accessing the Netflix Service and for whom you will be responsible.”

I don't see how a library subscription to Netflix could be considered to be “personal” – not when the purpose of the subscription is to lend the movies to others, rather than watch them yourself (as if a library could even watch a movie.)  Nor can authorized users of a library be considered to be “members of your immediate household,” nor could library workstations be considered to be “personal computers.”  I am not even sure that we could consider Concordia’s use to be non-commercial, since its purpose is to avoid paying purchase, rental, and licensing fees – and avoiding purchasing an item has at times been considered to be “commercial.”

It looks to this non-lawyer like Concordia may not be complying with the terms of the license.  As a general rule, I think libraries should respect the terms of the contracts they enter into.  If you don’t like a license, regardless of whether it is the license that accompanies an e-book reader or a Netflix subscription, try to change it.  (At least one recent article suggests that we should be trying to negotiate different terms so that Netflix subscriptions can be used in higher education.) 

Of course, one can also ask how much risk does Concordia College face because of the library’s actions.  In reality, the answer is probably "not much."  Fitzgerald reports that to date “There have been no legal repurcussions (sic) involving our Netflix accounts.”  If Netflix found out about Concordia’s program and objected, it is most likely that it would simply cancel the library’s membership rather than also bring legal action.  I am a little more worried, though, about the possible response of copyright owners.  Movies that have been secured via Netflix in violation of the license agreement between Netflix and the end user (or that are used in ways that Netflix has not licensed) are no more legal than pulling the movie off of BitTorrent.  A copyright owner could theoretically sue Concordia College for willful copyright infringement (distribution, in this case), which carries with it a $150,000 fine per infringed movie. Until recently, however, suing schools and libraries was considered poor form, and so the risk of a lawsuit is likely still small.

Given the potential high risks that a Netflix lending program entails, though, I would only enter into such a program with the full support of my institution’s legal department.  I hope that Fitzgerald considers posting Concordia’s counsel’s legal assessment of the risks and benefits of the program.  (And let me credit Fitzgerald’s piece for at least raising the issue, something that a Library Trends article that she cites in her post fails to do.)

Is there any way a library can utilize Netflix in its collection development?  Certainly negotiating with Netflix for different terms would be a start (though it would not surprise me if Netflix’s agreement with the film distributors might actually prohibit anything but personal, non-commercial use).  A library could also consider buying individual memberships in Netflix for all of the students.  But until I see a legal justification for a Netflix borrowing program, I think this has to go into the “easy – but not legal” category.

UPDATE: An article on the topic in the Chronicle of Higher Education indicates that Netflix agrees with me that library use of a Netflix subscription is outside of the terms of use.  It does not discuss whether such a use would, in addition to being a contractual problem, also be a copyright infringement.

Image from dolphinsdock, http://www.flickr.com/photos/66568868@N00/3078317546/, licensed CC-BY-NC-ND.

How a watch manufacturer could make the use of foreign manuscripts and artwork a copyright violation

(by Peter Hirtle)

One wouldn’t normally expect a lawsuit between a watch manufacturer (Omega) and a big-box retailer (COSTCO) about the scope of “gray-market” sales of manufactured goods to have much of an impact on libraries and archives, but the upcoming Supreme Court case of Costco v. Omega is the exception.  At stake are some of the core activities of libraries and archives. 

The case centers on the “first sale” doctrine in copyright law codified in Section 109: the idea that once a copyright owner has sold a work, its ability to control further distributions and uses of that work end.  In the Appeals Court decision now before the Supreme Court, the court found that works made and sold overseas did not have 109 protections.  As Kevin Smith noted in an earlier posting on the case, if 109 does not apply to books manufactured abroad, it raises the issue of whether libraries can legally lend foreign items.

The threat that the Appeals Court decision poses to traditional library lending, according to Brandon Butler of ARL, led the Library Copyright Alliance to file an amicus brief that argues that right of libraries to lend foreign material should be protected.  For similar reasons, several library associations joined the amicus brief authored by EFF and summarized here. 

Unfortunately, the excellent LCA brief by Jonathan Band doesn’t go far enough.  It is focused on library lending.  And it notes that Section 602(a)(3)(c) of the Copyright Act does allow a library to import up to 5 copies of a foreign work “for its library lending or archival purposes,” activities that would be unaffected by a decision in this case (though Band has identified a neat little technicality of concern). 

Section 109 is about more than just the lending of copyrighted materials, however.  Section 109(c) also authorizes the public display of a copyrighted work, “either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located.”  In most archival repositories, foreign manuscripts are not lent to individuals, but rather they are allowed to look at them in a reading room.  Similarly, foreign art works legally acquired from individuals other than the copyright owner are publicly displayed on museum walls.  The decision of the Appeals Court that the phrase “lawfully made under this title” does not apply to foreign goods acquired from someone other than the copyright owner puts both of these practices in jeopardy.

Imagine the situation at a place like the Harry Ransom Center.  Because it acquired the Tom Stoppard Archives from Stoppard, the copyright owner, it would still be able to use Section 109 to display Stoppard’s own material from the collection.  It would not, however, be able to use Section 109 to show to users any 3rd party copyrighted material created abroad and included in the collection.   Nor would it be able to use Section 109 to put non-Stoppard-created material on exhibit.  It might find itself in a similar situation to the Irish National Library, which had to secure a special act of Parliament to exhibit physical copies of some James Joyce manuscripts (as I discuss on p. 72 of Copyright and Cultural Institutions).

The situation for archives isn’t entirely dire if the decision is upheld.  A repository could still develop a fair use rationale for the public use of foreign manuscripts.  Alternatively, if the LCA’s request that library lending be acknowledged in a decision is accepted, an archives could argue that it is “lending” a manuscript to a patron in a reading room, even if the work is not allowed to leave the room.  It would be much harder, however, for a library or museum to argue that public exhibition is a fair use.  We might not be able to display publicly foreign works without the permission of the copyright owner.

Big thanks, therefore, to the library associations for speaking out on the need to have first-sale apply to items purchased abroad as well as in the U.S.  This is a case that we will all follow closely.

(Illustration: “Programme" of Arcadia from the premiere production at the National Theatre, linked from http://www.hrc.utexas.edu/ransomedition/2008/fall/stoppard.html)

Happy Belated Birthday Copyright Office!

H/T to the Library History Buff blog for noting that 8 July was the 140th birthday of the Copyright Office.  Both the centralizaiton of registrations in one office and the placement of that office in the Library of Congress have been of inestimable value to the American public.  I am already looking forward to the big sesquicentennial birthday bash in 10 years.

C&CI Update: Legal Action Against a Cultural Institution

(by Peter Hirtle)

On p. 195 of Copyright & Cultural Institutions (C&CI), I noted that “Court cases involving copyright infringement by cultural heritage institutions are rare.”  Thanks to a blog posting at Clancco.com, I am sorry to report that another has been added to the list. 

A professional photographer, Anne Pearse-Hocker, is suing a production company, Firelight Media, for copyright infringement for using three of her photographs in its documentary, We Shall Remain: Wounded Knee.  A copy of the complaint is linked from the Clancco.com posting.  She is also suing the Smithsonian Institution for copyright infringement and breach of contract because the National Museum of the American Indian made copies of the photographs for Firelight Media, seemingly in violation of the Deed of Gift that Pearse-Hocker signed when she gave the negatives to the museum.  I have secured a copy of that complaint from PACER and posted it to SCRIBD here (and below). 

It is always dangerous to draw conclusions from just one side of an argument; I am looking forward to reading the Smithsonian’s response.  Nevertheless, the document reveals the kind of misunderstandings that can result when repositories get into the permissions business. 

To me, the most troubling portion of the document is Exhibit D, the museum’s permission form, which states that “Permission is granted for the use of the following imagery, worldwide, all media rights for the life of the project.”  Firelight is then charged $150 in permission fees for the use of the three listed images.

If I was Firelight, I would assume that I was in the clear; I had worldwide rights.  What the form does not make clear is that the permission derives from the Smithsonian’s rights as the owner of the physical negatives.  Only in the small print on the back of the form, in item 7, does one learn that this permission only covers the rights the Smithsonian has (without specifying what those are), and does not encompass other rights.  But I can well imagine that a user would see “worldwide permission” and assume everything is covered.  The case is a strong reminder that when making reproductions for patrons and granting permissions, repositories need to be crystal-clear about what they are doing.  In many ways, I wish we could come up with a word other than “permissions,” which is so closely connected to copyright, when it is physical ownership that is in play.

I also wonder how much the desire to run a photo reproduction permissions business and generate some revenue may have contributed to the museum’s seemingly sloppy practice.  Regardless of how the case turns out, the legal process is going to prove to be expensive, and if the Smithsonian should lose, it could face up to $150,000 in statutory damages per image.  $50 per image in licensing revenue hardly seems worth it if the desire to generate revenue led to the mistakes that appear to have been made. 

This case should be interesting to follow – if it is not settled out of court.  

PearseHocker v US 00269

May a library lend e-book readers?

(by Peter Hirtle)

A recent post at the Citizen Media Law Project about one’s First Sale rights with e-books got me thinking about libraries.  CMLP noted that with e-books, one has no first sale rights because they are usually governed by licenses instead.  First sale, however, is fundamental to the business of libraries.  It allows us to loan to others copies of printed books we have purchased without violating the copyright owner’s rights to distribute the work.  Some libraries have started lending e-book readers to faculty and students, including the Lewis Music Library at MIT and the NCSU Library, which are both loaning iPads.  Is this legal?

While a library can buy an iPad device, it is not much use without software, and that software comes with a license.  According to the iPad Software Agreement posted at ScribD, Apple owns the software on the iPad you purchased.  You are allowed to install that software on a single Apple-branded iPad.  You cannot, however, “rent, lease, lend, sell, redistribute, or sublicense the iPad Software.” (emphasis mine) 

An argument can be made that lending the physical device is also the loan of the software, which is prohibited by the license.  This interpretation is supported by the only explicit exemption to the prohibition against redistribution: namely, your ability to transfer the software to someone else when you transfer ownership of the iPad. 

It is not just the iPad that has a license, however.  Every app on the platform and any purchased e-book is also likely to come with a license that would prevent lending of the content.  The Kindle license agreement, for example, stipulates that you may “keep a permanent copy of the applicable Digital Content and to view, use, and display such Digital Content an unlimited number of times, solely on the Device or as authorized by Amazon as part of the Service and solely for your personal, non-commercial use.” (emphasis mine)  A library purchasing a Kindle book for lending purposes is not making personal use of that title, even if the use is non-commercial. 

Under the standard terms of the agreement, it would seem to this non-lawyer that a library could no more lend an iPad with a Kindle book on it than it could lend Netflix movies to patrons.  Maybe one could argue that all the library is doing is lending computer programs, which is permitted under Section 102(2), provided that the proper warning notices are included on the device itself.  But while this might apply to the iPad software, I am not sure that I would want to argue that an iBook or Kindle book is also a computer program: “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.”  Furthermore, licenses usually take precedence over any rights available in the law.

I hope, therefore, that libraries that are experimenting with lending e-book readers have thoroughly vetted their program with an attorney.  Mostly, I hope they are working with Apple, Amazon, etc. to create new library-friendly licenses.  We need licenses that will allow libraries to purchase e-books that can then either be copied directly onto patron-owned devices or copied onto library devices that are then lent to patrons.  If e-books become as important as people predict and libraries do not have the legal right to lend those e-books, the traditional role of the library as a free source of reading matter will fade away.

Photo credit: “Library staff circulate iPads to students,” http://www.flickr.com/photos/surlygirly/4505485398/in/set-72157623814845910.  © 2010 Mary Carmen6676.  Used here under an assertion of fair use.

Free access to a documentary edition

Almost two years ago, I wrote complaining about a report from NARA that seemingly gave up on open access to the papers of the Founding Fathers and endorsed instead a subscription delivery model.  I suggested that other models that encouraged free access to the content could be followed instead.

I was therefore delighted to learn a few weeks ago about the Ulysses S. Grant Digital Collection hosted by Mississippi State University.  The project has made the 31 published volumes of the Grant papers freely available as PDF downloads.  In addition, they are adding an assortment of digitized cartoons, sheet music, and other material that is also freely available.

Is the system as powerful and useful as the Rotunda delivery platform that is being used by the University of Virginia to deliver the papers of the American Founding Era?  No – though in the you can do searches in the Grant collection for words, and the search terms will appear highlighted in the page images on which they appear.  The big difference is that Mississippi State is making a usable version of the page images of the printed volumes available for free.  Wouldn’t it be wonderful if UVA also provided a basic level of free access to the printed Founding Fathers volumes so that everyone could have access to at least one form of the content?  The subscriptions could remain available to those institutions that needed the more sophisticated search and display functions of Rotunda.

Congratulations to Mississippi State for their important contribution to American history.

C&CI update: Elena Kagan's thesis

In the context of the case study on dissertations, theses, and student papers in Copyright & Cultural Institutions, I discussed (on p. 236) the controversy surrounding the release of Hillary Clinton's and Michelle Obama's undergraduate theses during the last campaign.  The issue has come up again, this time with Elena Kagan's senior thesis written while she was at Princeton.  According to Techdirt, a conservative web site, RedState.com, secured a copy and posted it.  The Princeton University Archives then wrote to them requesting that it be taken down.  Politico now reports that the White House is going to release both Kagan’s Princeton paper and Oxford thesis.

The case is interesting because it illustrates many of the complexities associated with reproducing student papers.  And it is a good example of the confusion that can result when libraries and archives co-mingle copyright and ownership issues.  So let's ask a series of questions about the incident.

Who owns the copyright?

RedState reports that it pulled the thesis “at the request of Princeton University exercising its copyright rights.”  Clearly they think that Princeton owns the copyright in the thesis.  The letter from Daniel Linke, University Archivist and Curator of Public Policy Papers at Princeton, actually only states that the paper is protected by copyright.  It doesn’t state who owns that copyright.  While a few schools (most notably MIT) claim copyright ownership of graduate dissertations, copyright in an undergraduate paper will almost certainly belong to Kagan, not Princeton.

Is the work in the public domain?

The paper lacks a copyright notice.  If the paper is unpublished, then it is protected by copyright.  There is no need to include a copyright notice on an unpublished work; fixation is enough to secure copyright.  If the paper was published, however, then it would be in the public domain.  Until March, 1989, it was mandatory to include a copyright notice on a published work in order to secure copyright protection.

What constitutes publication?  The definition in the Copyright Act is “the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication.”  Princeton does not generally distribute the paper, but rather fulfills specific requests for single copies.  My guess would be that this does not constitute general publication – though there is at least one court case that could be read to suggest otherwise.  I would therefore conclude that it is not in the public domain.

On what basis does Princeton make copies?

This is unclear.  It very well could be that as a condition of submitting a senior thesis, a student must agree to its deposit in the Princeton Library and also authorizes the Library to make copies for users. 

If permission is not given in advance, then Princeton could make copies for users using Section 108(e) of the Copyright Act, which allows a library or archives to make a copy of an entire copyrighted work when “the library or archives has first determined, on the basis of a reasonable investigation, that a copy or phonorecord of the copyrighted work cannot be obtained at a fair price.” 

There are some indications that Princeton may be using 108.  For example, the order form to request a copy of a senior thesis, available from the senior theses page, includes the copyright warning notice required by Section 108.  On the other hand, the reasonable investigation required by Section 108(e) normally requires that one check with the copyright owner to see if she can provide a copy.  It is also possible that they consider making the copies to be a fair use.

On what grounds did Princeton ask that it be taken down?

In theory, anyone could write to a web site and tell them to take down copyrighted work.  Only the copyright owner, however, can implement a DMCA takedown notice or bring legal action against copyright infringement.  Princeton’s letter requested that RedState take down the paper immediately “before further action is taken.” 

Who could take further action?  Elena Kagan could, as the copyright owner.  And Princeton could, if it had a contractual arrangement with the RedState site – if,in other words, Princeton had provided the RedState site with a copy of the thesis in response to a request from RedState. 

What is copyright and what is contract?

Linke’s letter says “Copies provided by the Princeton University Archives are governed by U.S. Copyright Law…”  Unless the work is in the public domain, this is certainly true.  It then adds, “…and are for private individual use only.”  Section 108 says that Princeton can make a copy of the thesis using Section 108 so long as it has no notice that the copy will be used for anything other than “private study, scholarship, or research.”  Once the copy is made, however, the obligation to respect copyright shifts to the person who requested the copy, as per Section 108(f)(2).  They are allowed to make a fair use of the copy – which may be for a purpose other than “private individual use.”  The limitation to “private individual use,” therefore, is not a copyright restriction but one Princeton imposes.

The Linke letter adds “Any electronic distribution is prohibited, as noted on the first page of the copy that is on your website.”  The first page of the PDF attempts to create a “browse-wrap” agreement with the reader.  It states:

By accessing this file, I agree that my use falls within “fair use” as defined by the copyright law.  I further agree to request permission of the Princeton University Library (and pay any fees, if applicable) if I plan to publish, broadcast, or otherwise disseminate any material held by the Library.  This includes all forms of electronic distribution.

The inclusion of “fair use” language and references to copyright might lead someone to think that Princeton is exercising its copyright rights.  But the limitations here are in fact based on its rights as the physical owner of the original thesis.  If you want to be able to consult a copy of the thesis, you have to accept and abide by these terms.

Is this legal?  Since at least Bobbs-Merrill v. Strauss in 1908, the courts have said merely including a notice in a printed volume does not necessarily make for a binding contract.  Similar wording on Princeton’s order form may create a binding contract with people who place an order, but I am not so sure that Princeton would have a case against third parties who may have acquired copies of the thesis from others.  The question would really depend on whether the statement quoted above on the first page of the document establishes an enforceable contract with the recipient.

FERPA

The senior paper would, I suspect, be an “educational record” according to FERPA.  It could only be disclosed to the public, therefore, with the permission of the student.  We can assume that Princeton secures a FERPA release as part of the senior thesis process.

Summing up

Princeton’s letters and forms reflect a common mistake in libraries and archives.  Often they will talk about “copyright,” when in reality they are trying to exert contractual rights that arise from being the copyright owner.  If you ask someone to take something down, it is probably a good idea to make it crystal clear whether you are doing this as the copyright owner or as the owner of a physical object that has licensed its use to you.